WELL-MADE TOY MFG. CORP. v. GOFFA INTERN. CORP.

The opinion of the court was delivered by: Weinstein, Senior District Judge.

MEMORANDUM, ORDER AND JUDGEMENT

I. Introduction

Based on its copyright and registration of its 20 inch
ragdoll, plaintiff sues for copying of its 48 inch rag doll,
designed by it as a grown-up version of the smaller toy.
Judgement for defendant is required because small dolls, like
humans, grow up with substantially changed proportions.

II. Procedural History

In 1999, plaintiff, Well-Made Toy Manufacturing Corporation
("Well-Made"), filed separate actions against Goffa
International Corporation ("Goffa"), the manufacturer of the
allegedly infringing doll, and King Kullen Grocery Company
("King Kullen"), a chain of supermarkets that sold it at retail.
Since Well-Made has indemnified King Kullen, the singular word
"defendant" is used throughout this memorandum.

The cases were consolidated for all purposes. They were tried
without a jury.

III. Facts

A. Rag Dolls

Rag dolls are soft, stuffed fabric playthings which were
traditionally made at home from scrap pieces of fabric.
Currently, most rag dolls are manufactured by toy companies. The
doll designer in this country creates annotated paper patterns.
Mass. cutting of individual fabric pieces and sewing together of
the parts to create an empty shell, or "skin," are typically
accomplished in China. The shapes of the constituent fabric
pieces and the way in which the pieces are assembled and stuffed
determines the three-dimensional form of the doll. The skins are
stuffed in this country to give the toy volume.

Designing rag dolls is not a field in which experimentation or
deviation from the norm is highly valued. The standard elements
are well-known. As plaintiffs designer testified, "it is putting
things together to make one new creation that makes it
individual." Rag dolls typically have in one skin a head, a
torso, limbs, hands, and feet; a dress and bonnet can either be
attached or separate. They commonly incorporate quaint outfits,
including dresses of traditional style, print fabric with
matching bonnets, hair consisting of yarn which is often
braided, faces which often have embroidered features, limbs that
are sometimes more floppy than the torso, and shoes which are
built in and stuffed with the same material as the rest of the
doll. Ruffles, cuffs, and bows are common features. Density of
the stuffing determines rigidity.

B. Sweetie-Mine

The plaintiff, Well-Made, produces a ragdoll named "Sweetie
Mine". It was designed for plaintiff in 1995 by Marla Speer. Ms.
Speer began by drawing a two-dimensional illustration. She then
created fabric patterns for the pieces that would make up the
three-dimensional doll. She also laid out embroidery for the
face and painted a pattern for the doll's dress. To give a more
defined form to the doll's face, the designer incorporated a
polyester backing, or "face pocket." She testified that she
borrowed the idea for a "face pocket" from generally available
designs of teddy bears and other stuffed animals. Her doll was
20 inches tall.

Well-Made received a copyright registration for the Sweetie
Mine doll in 1996. Copyright Registration No. VA 770-506 (dated
April 26, 1996). The deposit pictures accompanying the copyright
application were photographs of the 20 inch doll. Copyrightable
features of the work were identified as the "facial artwork and
body sculpture."

In early 1998, Well-Made developed a 48 inch version of the
Sweetie Mine. This 140 percent increase in scale was
accomplished by using a photocopy machine to enlarge the paper
drawings of the 20 inch fabric patterns. Enlarged patterns were
then adjusted so that the larger doll's proportions would remain
pleasing. For example, the head was reduced in size and the legs
lengthened. Ms. Speer testified that these adjustments were
intended to preserve the "same aesthetic appeal as the original
design." Krista Kosmas, who also participated in the creation of
the 48 inch doll for Well-Made, testified that enlarging the
doll without altering the proportions would result in a "fat,
very klutzy looking doll."

Both admitted that these adjustments were not mathematically
governed by any strict rules of proportionality; artistic
discretion was required. Ms. Speer's testimony was as follows:

Q: Was there an exact ratio of the head to the body
of the forty-eight inch doll that you were working
toward?

A: No.

Q: There was just whatever you thought looked good?

A: Yes.

Q: In your artistic judgement?

A: Yes.

Q: Were there a range of sizes for the head in
comparison with the body of the forty-eight inch
doll that you might have chosen?

A: I think there might be a small range.

Q: Some other designers might have chosen a
different proportion of the head to the body and
the rest of the doll?

A: Oh, yes. Might not have looked as good, though.

Aside from these proportional considerations, three
substantive changes were made that seem unrelated to proportion.
First, the shape of the faces is different. That of the 20 inch
doll has five distinct angles: two just below the cheeks, two at
the temples, and one at the peak of the forehead. This gives the
face a soft pentagonal look, like an inverted strawberry that
comes to a peak at the forehead. The 48 inch doll has a wider,
more elliptical face; the distinct angles are absent; and the
head juts forward from the body further as a result of larger
darts in the fabric. Second, the features of the 20 inch doll
are set lower in the face, so that it has a high forehead; the
facial features of the 48 inch doll are more centered, so that
the forehead is lower. These changes give the 48 inch doll an
"older" look than the 20 inch doll. Finally, the bow, or sash,
which was included on the back of the waistband of the 20 inch
doll was omitted from the 48 inch product.

All in all, the Well-Made 48 inch rag doll is an attractive,
perky looking four foot companion for a preteen child, while the
20 inch is sweet and cuddlesome, small enough to be snuggled up
to by a toddler.

Well-Made did not file a copyright application for
registration of the 48 inch doll.

C. Huggable-Lovable

The defendant manufactures and imports toys. It has been in
the business of selling ragdolls since 1992. Among the dolls
sold by Goffa was a small seated ragdoll (CL), which it
copyrighted in 1996.

Douglas Song, President of defendant Goffa, learned that a
four foot tall rag doll (plaintiffs) was selling well in United
States markets. He decided to introduce a competitive work. In
April of 1998, he ordered his Shanghai factory to develop a
prototype based on the face and hat of his CL Doll, and body
parts from various other Goffa dolls. This factory had never
manufactured rag dolls. Edward Sclier, defendant's general
manager, testified that the factory employees were "not
creative" when it came to product design, and that they
"couldn't do much on their own."

Later that month, Mr. Song and Mr. Sclier attended a trade
fair in China. There they noticed that a company named Hubei was
exhibiting rag dolls of differing sizes; one doll in Hubei's
catalogue appears to be a copy of plaintiffs 20 inch doll. Hubei
was not displaying any 48 inch dolls at the fair, so Mr. Song
requested that Hubei create a 48 inch sample and quote a price.
Mr. Song testified that while at the fair he did not view the
Hubei catalogue, but that seems doubtful since he was there to
see what was available in the market.

Defendant admitted obtaining a sample 48 inch doll from Hubei.
The evidence suggested that the Hubei 48 inch sample doll's face
and body strongly resembled the Well-Made's 48 inch Sweetie
Mine. Mr. Song sent the 48 inch sample he had received from
Hubei to the Shanghai factory as an example of "how nice other
people make it."

Defendant also obtained at least one of Well-Made's 48 inch
dolls and disassembled it during its own design process. Mr.
Sclier admitted that he himself had purchased a Well-Made 48
inch doll at retail in this country. While he swore otherwise,
it is apparent from his equivocal statements on the stand that
he sent this doll to the company's Shanghai factory in order to
have it reproduced; there, it was copied with some variations
based on the Hubei 48 inch sample.

Defendant's Chinese factory made design changes based on the
Hubei sample, some of Goffa's own dolls, and the Well-Made doll.
Mr. Song decided to use his own factory's design, and informed
Hubei that he would not be placing an order with it.

As already suggested, and is apparent from the picture set out
below, defendant's 48 inch doll has an entirely different face
than plaintiffs Sweetie-Mine 48 incher, with a head that does
not stand out from the body as much as does plaintiffs; has
slightly different body parts; uses dissimilar clothing, with a
style copied only in part from plaintiffs doll's dress (as in
the ankle and the wrist bands); embodies a much longer skirt;
and utilizes poorer cloth and sewing. The stuffing seems about
the same in density. All in all, the alleged infringing 48 inch
doll looks like a slightly less alert and attractive relative of
plaintiffs 48 inch doll, but definitely not like a twin of
either the 20 or 48 incher.

Plaintiffs Sweetie Mine doll was sold in the United States by
retailers including King Kullen Supermarkets, a defendant in
this action. Defendant's Huggable Lovable doll was introduced at
a lower price than what plaintiff had been asking. To keep
competitive, plaintiff then changed its 48 inch doll slightly by
"slimm[ing] the pattern down," cutting its cost, and lowering
its price.

In October 1998, attorneys for plaintiff warned defendant that
they believed Goffa's 48 inch doll infringed on copyrights owned
by Well-Made. A few months later, in early 1999, Goffa
instructed its factory to substantially change the design of its
48 inch doll and it ceased production of the allegedly
infringing version.

IV. Law

A. Jurisdiction

1. Registration Requirement

For any work created after January 1, 1978, copyright
automatically inheres upon the work's creation. See
17 U.S.C. § 102(a) ("Copyright protection subsists, in accordance with
this title, in original works of authorship fixed in any
tangible medium of expression . . ."); Montgomery v. Noga,
168 F.3d 1282, 1288 (11th Cir. 1999); 2 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright § 7.16[A][1] at 7-147 (2002).
Registration with the United States Copyright Office is not
required to obtain copyright protection. 17 U.S.C. § 408(a) ("At
any time during the subsistence of [the copyright], the owner of
copyright or of any exclusive right in the work may obtain
registration of the copyright. . . . Such a registration is not
a condition of copyright protection.").

Registration is a precondition for bringing an infringement
action in federal court. 17 U.S.C. &sect; 411(a) ("no action for
infringement of the copyright in any United States work shall be
instituted until registration of the copyright claim has been
made in accordance with this title."). It is a jurisdictional
prerequisite, not a substantive element. See Geritrex Corp. v.
Dermarite Indus., LLC, 910 F. Supp. 955, 966 (S.D.N.Y. 1996).
Actual certification by the Copyright Office is not necessary. A
copyright holder may commence an action for infringement as soon
as the Copyright Office has received a proper application, fee
and deposit. See Apple Barrel Prods., Inc. v. Beard,
730 F.2d 384, 386-7 (5th Cir. 1984); 2 Nimmer § ...

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